Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 45
`Date: March 7, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`STRYKER CORPORATION and
`WRIGHT MEDICAL TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`OSTEOMED LLC,
`Patent Owners.
`
`
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)1
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, RICHARD H. MARSCHALL, and
`JAMIE T. WISZ, Administrative Patent Judges
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Denying Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`1 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 45
`Date: March 7, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`STRYKER CORPORATION and
`WRIGHT MEDICAL TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`OSTEOMED LLC,
`Patent Owners.
`
`
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)1
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, RICHARD H. MARSCHALL, and
`JAMIE T. WISZ, Administrative Patent Judges
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Denying Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`1 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner requested authorization to file a motion to submit
`
`supplemental information under 37 C.F.R. § 42.123(b) on Wednesday,
`
`January 25, 2023 via email. The relevant portion of the email reads as
`
`follows:
`
`In connection with IPR2021-01450, -1451, -1452, -1453,
`Patent Owner seeks authorization to file a motion to
`submit as supplemental information pursuant to 37 C.F.R.
`§ 42.123(b), the deposition transcripts of Petitioners’
`experts (Mr. Leinsing and Dr. Holmes) from two other
`IPRs between the parties (IPR2022-00487 and IPR2022-
`00488).
`
`In connection with IPR2022-00189, -190, -191, Patent
`Owner seeks authorization to file a motion to submit as
`supplemental
`information pursuant
`to 37 C.F.R.
`§ 42.123(b), the deposition transcript of Dr. Holmes only.
`
`These depositions took place last week (January 18 and
`20, 2023 respectively) and the final transcripts were
`received on January 23, 2023, and could not have been
`submitted earlier. The testimony relates to prior art and
`issues that relevant to these proceedings, and the Board
`previously authorized Petitioners to submit in these
`proceedings declarations from Patent Owner’s expert,
`Michael Sherman, from IPR2022-00487 and IPR2022-
`00488. Patent Owner also seeks authorization to file a
`short paper (5 pages) in each proceeding to detail the
`relevance of the supplemental exhibits should the motion
`for leave be granted.
`
`Petitioners oppose Patent Owner’s request and believe that
`the above text improperly contains substantive argument.
`Petitioners will address the above substance during any
`teleconference on the matter.
`
`
`
`2
`
`
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`A telephone conference was held on January 27, 2023 among
`
`respective counsel for the parties and Judges Snedden, Marschall, and Wisz
`
`to discuss Patent Owner’s request. During the call, we granted Patent
`
`Owner request to submit its motion for supplemental information and
`
`granted Petitioner’s request for an opposition. Subsequently, Patent Owner
`
`filed a Motion to Submit Supplemental Information (Paper 43; “Mot.”) and
`
`Petitioner filed an Opposition (Paper 44; “Opp.”).
`
`In its Motion, Patent Owner proposes to submit, as supplemental
`
`information, Deposition Transcripts of Karl R. Leinsing (Proposed
`
`Ex. 2008) and Dr. George B. Holmes, Jr. (Proposed Ex. 2009) taken as part
`
`of IPR2022–00487 and IPR2022–00488 proceedings (“Stryker Patent
`
`IPRs”). Mot. 1. Patent Owner explains that they deposed Petitioner’s
`
`experts on January 18 and 20, and received the transcripts on January 23,
`
`2023. Id. at 2. On the same day, January 23, 2023, Patent Owner informed
`
`Petitioner of their intent to file the current motion. Id. Patent Owner argues
`
`their request is timely because they “could not have moved more swiftly.”
`
`Id.
`
`Patent Owner contends that the supplemental information provides the
`
`Board with a complete view of the parties’ positions regarding the prior art
`
`relied upon in this proceeding and the credibility of Petitioner’s experts.
`
`Mot. 2. First, Patent Owner contends that Mr. Leinsing, Petitioner’s expert
`
`in the Stryker Patent IPRs, contradicted Petitioner’s arguments in the current
`
`case regarding the Arnould disclosure and that this inconsistency should be
`
`considered in assessing Petitioner’s patentability challenge in this case. Id.
`
`at 3–4. In particular, Patent Owner that Mr. Leinsing the “leg of Arnould is
`
`
`
`3
`
`
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`‘in a different plane, and it’s offset and its axis to the hole is not in any
`
`relation to the main part of the Arnould plate,’ which is where the spine is
`
`located. Id. at 4 (quoting Prop. Ex. 2008, 151:18–20).
`
`Second, Patent Owner contends that Dr. Holmes undermines his own
`
`credibility because he discussed how a surgeon would know to use the
`
`Falkner plate but when asked about similar language regarding Slater in the
`
`Stryker Patent IPRs, he refused to answer whether Slater could be used. Id.
`
`at 4–5. In Patent Owner’s view, “Dr. Holmes’ demeanor, understanding of
`
`reference disclosures, and inability to testify from his surgical perspective in
`
`the Stryker Patent IPRs stands in stark contrast to his expansion of Falkner
`
`well beyond any of its explicit teachings.” Mot. 5.
`
`In its Opposition, Petitioner first contends that Patent Owner fails to
`
`identify how Dr. Holmes’ testimony in the Stryker Patent IPRs is relevant to
`
`the current proceeding. Id. Petitioner explains that Dr. Holmes’ testimony
`
`in this proceeding is directed solely to Falkner and that his testimony in the
`
`Stryker Patent IPRs related to Slater has no bearing on his testimony in the
`
`current proceeding. Id. at 1–2. “Rather, Patent Owner’s argument with
`
`respect to Dr. Holmes is based entirely on the issue of credibility, not
`
`relevance.” Id. at 1. Further, Petitioner provides various examples that
`
`explain the differences in context and why Dr. Holmes’ responses were
`
`different in this case versus the Stryker Patent IPRs.
`
`In its second argument, Petitioner contends that Mr. Leinsing’s
`
`deposition from the Stryker Patent IPRs is not relevant to the current
`
`proceeding because the claim language is different in both cases. Id. at 3.
`
`For example, Petitioner contends that
`
`
`
`4
`
`
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`
`The challenged claims [in these proceedings]
`require “a transfixation screw hole disposed along the
`spine” yet in IPR2022-00488, the challenged claims
`require a “third hole located between said first hole and
`said second hole.” EX1026, ¶¶263-264. The claim term
`“between” is subject to claim construction in IPR2022-
`00488. Prop. EX2008, 151:21–152:8. Mr. Leinsing’s
`testimony regarding “between” in IPR2022-00488 is
`wholly irrelevant to, and stands in stark contrast with, the
`term “elongate spine” which includes the entirety of the
`bone plate
`
`Opp. 3.
`
`Lastly, Petitioner contends that Patent Owner’s late submission is
`
`highly prejudicial because Petitioner has no ability to respond. Id. at 5.
`
`Upon consideration of the documents and the parties’ arguments, and
`
`for the reasons stated below, Patent Owner’s motion is denied.
`
`II.
`
`LEGAL FRAMEWORK
`
`As the moving party, Patent Owner bears the burden of proving that it
`
`is entitled to the requested relief. Under 37 CFR § 42.123(a)(1), a request
`
`for the authorization to file a motion to submit supplemental information
`
`must be made within one month of the date the trial is instituted. We
`
`instituted trial on March 11, 2022. The Patent Owner sought authorization
`
`on Wednesday, January 25, 2023, beyond one month of the date institution.
`
`We consider Patent Owner’s Motion as a “late submission” under 37 C.F.R.
`
`§ 123(b).
`
`Section 123(b) states: “A party seeking to submit supplemental
`
`information more than one month after the date the trial is instituted, . . .
`
`must show why the supplemental information reasonably could not have
`
`
`
`5
`
`
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`been obtained earlier, and that consideration of the supplemental information
`
`would be in the interests-of-justice.” Here, because Patent Owner seeks to
`
`submit supplemental information is beyond one-month of institution, it must
`
`show that the information could not have been obtained earlier and that its
`
`consideration is in the interest of justice. As the moving party, Patent Owner
`
`bears the burden of proving that it is entitled to the requested relief.
`
`37 C.F.R. § 42.20(c).
`
`III. ANALYSIS
`
`On this record, and in the particular circumstances of these
`
`proceedings, we are not persuaded that it is in the interests of justice to
`
`permit Patent Owner to introduce this new evidence at this late date. We
`
`tend to agree with Petitioner’s contention that Patent Owner fails to identify
`
`how Dr. Holmes’ and Mr. Leinsing’s testimony in the Stryker Patent IPRs
`
`are relevant to any claim in the current proceedings. Opp. 1–3. As
`
`explained by Petitioner, the scope of the challenged claims in the Stryker
`
`Patent IPRs differ from the challenged claims in these proceedings. Opp. 3.
`
`Further, it is not even clear that Dr. Holmes’ and Mr. Leinsing’s testimony
`
`in the Stryker Patent IPRs concerns the same statutory grounds of
`
`patentability as in those found in the current proceedings. Mot. 3–5. Thus,
`
`any potential inconsistency between statements made in the current
`
`proceeding and the Stryker Patent IPR’s would not be dispositive without
`
`sufficient explanation as to how those statements are relevant. Patent Owner
`
`has not provided that explanation. Id. Accordingly, the proposed
`
`supplemental information would have no bearing on our final decision and
`
`Patent Owner has not established that the introduction at this late date of
`
`
`
`6
`
`
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`testimony having no bearing on our final decision would be in the interest of
`
`justice.
`
`Furthermore, even if we accept that the evidence appears relevant to
`
`Patent Owner’s arguments, it is necessarily “[e]xpert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based,” because
`
`the “underlying facts or data” are not part of the record in this proceeding.
`
`37 C.F.R. § 42.65(a). Accordingly, this testimony would be “entitled to
`
`little or no weight” even if it were admitted. Id. It is not clear to us why the
`
`introduction of testimony that is entitled to little or no weight is in the
`
`interests of justice.
`
`Based on our analysis above, we deny the Motion for Supplemental
`
`Information because Patent Owner has not established that consideration of
`
`supplemental information would be in the interests of justice. 37 C.F.R.
`
`§ 42.20(c).
`
`IV. ORDER
`
`For the reasons given:
`
`ORDERED that Patent Owner’s motion to submit supplemental
`
`information under 37 C.F.R. § 42.123(b) is denied; and
`
`FURTHER ORDERED that Proposed Exhibits 2008 and 2009 are not
`
`admitted into the record of these proceedings and are expunged in each case.
`
`
`
`
`
`7
`
`
`
`IPR2021-01450 (Patent 8,529,608 B2)
`IPR2021-01451 (Patent 9,351,776 B2)
`IPR2021-01452 (Patent 9,763,716 B2)
`IPR2021-01453 (Patent 10,245,085 B2)
`
`For PETITIONER:
`
`Sharon Hwang
`Robert Surrette
`Scott McBride
`MCANDREWS, HELD & MALLOY LTD
`shwang@mcandrews-ip.com
`bsurrette@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`
`For PATENT OWNER:
`
`Jason Engel
`Katherine Allor
`Devon C. Beane
`K&L GATES LLP
`jason.engel.ptab@klgates.com
`katy.allor@klgates.com
`devon.beane@klgates.com
`
`
`
`
`8
`
`
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